USPTO Patents Application 09848583

Applic. No.: 09/848,583

Remarks :

Reconsideration of the application is requested.
Claims 1-13 remain in the application.

In item 3 on page 2 of the above- identified Office action, the
drawings have been objected to as failing to comply with 3 7
CFR 1.84 (p) (4) because the reference sign "10" has been used
to designate both a control unit and an unknown item in Fig. 1
and the reference sign "15" has been used to designate both a
synchronous belt and front stops.

Figs. 1 and 2 have been amended. Now the reference sign "10"
only refers to a control unit and the reference sign "15" only
refers to front stops. The specification has been amended
accordingly .

In item 4 on page 2 of the above- identified Office action, the
specification has been objected to as lacking clarity.

More specifically, the Examiner has stated that it is unclear
how the lifting device 2 uses the vertical, non-harmonic
oscillatory motion to press knives 3 against the knife 13. It
can be clearly seen from Figs. 1 and 2 that the knives 3 are
fixedly mounted on the lifting device 2 and thus move together
with the lifting device 2. It is, therefore, clear that the

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Applic. No.: 09/848,583

knives 3 can be pressed against the knife 13 during the
vertical, non-harmonic oscillatory motion of the lifting
device 2 .

In item 6 on page 3 of the above- identified Office action,
claims 1-10, 12, and 13 have been rejected under 35 U.S.C. §
112, first paragraph, as containing subject matter which was
not described in the specification in such a way as to
enable one skilled in the art to which it pertains, or with
which it is most nearly connected, to make and/or use the
invention .

More specifically, the Examiner has stated that it is unclear
how the lifting device 2 uses the vertical, non-harmonic
oscillatory motion to press knives 3 against the knife 13; it
is uncertain if the whole lifting mechanism 2 moves up and
down to move the knives 3 towards knife 13 or if the lifting
mechanism pivots about the screw and during this pivot the
blades are dropped down to cut the work piece; it is not clear
what structure inside or outside the transmission 22 connects
the first drive 1 to the lifting mechanism 2 and what
structure allows the lifting mechanism 2 to have the vertical,
non-harmonic oscillatory motion; and it is not clear what type
of cutting is taking place.

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Applic. No.: 09/848,583

It is noted that the enablement requirement under 35 U.S. C. §
112, first paragraph, does not require Applicants to disclose
everything necessary to practice the invention. In fact, what ~
is well-known is best omitted. All that is necessary is that «
one skilled in the art be able to practice the claimed
invention, given the level of knowledge and skill in the art.
Further the scope of enablement must only bear a "reasonable
correlation" to the scope of the claims. As concerns the
breadth of a claim relevant to enablement, the only relevant
concern should be whether the scope of enablement provided to
one skilled in the art by the disclosure is commensurate with
the scope of protection sought by the claims . See MPEP
2164 . 08 .

A person skilled in the art would easily understand from the
drawings and the disclosure of the invention of the instant
application how the lifting device 2 uses the vertical, non-
harmonic oscillatory motion to press knives 3 against the
knife 13. How the lifting device 2 moves, how the
transmission 22 connects the first drive 1 to the lifting
mechanism 2, how the transmission 22 allows the lifting
mechanism 2 to have the vertical, non-harmonic oscillatory
motion, and what type of cutting is taking place are not
essential to the invention of the instant application and are
not claimed in the claims. These functions can be achieved by

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Applic. No.: 09/848,583

a person skilled in the art in numerous ways without undue
experimentation .

In item 8 on page 4 of the above -identified Office action,
claims 1-10, 12, and 13 have been rejected as being indefinite
under 35 U.S.C. § 112, second paragraph.

Claims 1-10, 12, and 13 are believed to be definite for the
same reasons as discussed above.

It is accordingly believed that the specification and the
claims meet the requirements of 35 U.S.C. § 112, first and
second paragraphs. Should the Examiner find any further
•objectionable items, counsel would appreciate a telephone call
during which the matter may be resolved. The above -noted
changes to the claims are provided solely for cosmetic and/or
clarif icatory reasons. The changes are neither provided for
overcoming the prior art nor do they narrow the scope of the
claims for any reason related to the statutory requirements
for a patent .

In view of the foregoing, an early issue of an Office action
as to the merits of claims or an issuance of a Notice of
Allowance is solicited.

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Applic. No.: 09/848,583

In the event the Examiner should still find any of the claims
to be unpatentable, counsel would appreciate a telephone call
so that, if possible, patentable language can be worked out.

Petition for extension is herewith made. The extension fee
for response within a period of two months pursuant to Section
1.136(a) in the amount of $410.00 in accordance with Section
1.17 is enclosed herewith.

Please charge any other fees which might be due with respect
to Sections 1.16 and 1.17 to the Deposit Account of Lerner and
Greenberg, P. A., No. 12-1099.

August 7, 2 0 03

Lerner and Greenberg, P. A.
Post Office Box 2480
Hollywood, FL 33022-2480
Tel: (954) 925-1100
Fax: (954) 925-1101

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